Ex Parte Kim

Board of Patent Appeals and Interferences

Apr 18, 2011

10216875 (B.P.A.I. Apr. 18, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte CHUL-MIN KIM
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Appeal 2010-001816
Application 10/216,875
Technology Center 2400
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Before ROBERT E. NAPPI, CARL W. WHITEHEAD, JR., and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant’s invention relates “to tuning signal processing and tuning
circuits with small output drive currents exhibiting increased drive current
capacitance at an output terminal” (Spec. 1). Appellant appeals under 35
U.S.C. § 134(a) from the Examiner’s rejection of claims 14-49 under 35
U.S.C. § 102(b) as anticipated by Rotzoll (US 5,737,035; issued Apr. 7,
1998).
We reverse.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter the
following new grounds of rejection:
Claims 14, 18, 25, 36, 37, and 45 are rejected under 35 U.S.C. § 112,
¶ 2.
Claims 25-49 are rejected under 35 U.S.C. § 112, ¶ 1.

35 U.S.C. § 112, ¶ 2, REJECTION
PRINCIPLES OF LAW
35 U.S.C. § 112, ¶ 2 requires that the specification of a
patent “conclude with one or more claims particularly pointing
out and distinctly claiming the subject matter which the
applicant regards as his invention.” Because claims delineate
the patentee’s right to exclude, the patent statute requires that
the scope of the claims be sufficiently definite to inform the
public of the bounds of the protected invention, i.e., what
subject matter is covered by the exclusive rights of the patent.
Otherwise, competitors cannot avoid infringement, defeating
the public notice function of patent claims. (“[T]he primary
purpose of the requirement is ‘to guard against unreasonable
advantages to the patentee and disadvantages to others arising
from uncertainty as to their [respective] rights.’”) The Supreme
Court has stated that “[t]he statutory requirement of
particularity and distinctness in claims is met only when [the
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claims] clearly distinguish what is claimed from what went
before in the art and clearly circumscribe what is foreclosed
from future enterprise.”
Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir.
2008) (citations omitted) (brackets in original).
[T]he patent drafter is in the best position to resolve the
ambiguity in the patent claims, and it is highly desirable that
patent examiners demand that applicants do so in appropriate
circumstances so that the patent can be amended during
prosecution rather than attempting to resolve the ambiguity in
litigation.
Id. at 1255.
ANALYSIS
Claims 14, 18, 25, 36, and 37 are independent. Claim 18 is
illustrative:
18. A broadcasting signal processing system
comprised of a circuit module for processing a radio frequency
broadcast signal, said circuit module comprising:
an input terminal configured to receive said radio
frequency broadcast signal;
a tuner circuit in operable connection with said input
terminal to receive said radio frequency broadcast signal
therefrom, said tuner circuit being configured to convert said
received radio frequency broadcast signal into at least an
intermediate frequency signal;
a filter in communication with said tuner circuit to
receive said intermediate frequency signal therefrom, said filter
being configured to define frequency characteristics of said
intermediate frequency signal to produce a frequency
characteristics defined intermediate frequency signal;
a demodulator in communication with said filter to
receive said frequency characteristics defined intermediate
frequency signal therefrom, said demodulator being configured
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to produce at least a video signal based on said frequency
characteristics defined intermediate frequency signal;
an external circuit configured to receive said video signal
from said demodulator for having an input [sic: with?] a
required input level, a high frequency component of said video
signal having a gain sufficient for compensating an attenuation
of said high frequency component to satisfy said required input
level of said video signal processor [sic: said external circuit]
without using an external buffer between said demodulator and
said external circuit.
(emphasis added).
Claim 18’s italicized language begs the following question: What
does it mean for a high frequency component of said video signal to have “a
gain sufficient for compensating an attenuation of said high frequency
component to satisfy said required input level of [said external circuit]
without using an external buffer between [the] demodulator and [the]
external circuit”? The claim does not provide any objective standard for
determining (i) what the required input level of the external circuit is; (ii)
how much attenuation the high frequency component of the intermediate
frequency signal experiences; (iii) how much signal attenuation or
deterioration is permissible; or (iv) what level of gain would be sufficient to
compensate for such attenuation? We look to Appellant’s Specification for
further guidance, but the Specification does not provide sufficient
clarification.
At the Specification’s outset, Appellant acknowledges tuning circuits
of the type recited in claim 18 were generally known (see Fig. 1),1

1 During the oral hearing held March 15, 2011, Appellant’s representative
acknowledged that the “Background Art” embodiment of the tuner circuit
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describing the prior-art tuning circuits’ components and operation as
follows:
Typically, a tuning circuit in a video tape recorder (i.e., a
VCR) includes an [sic: a] radio frequency converter, a tuner and
a demodulator. A broadcasting signal received by an antenna is
output to a radio frequency amplifier and an output mode
switch through a distributor. The RF converter includes the
distributor, an output switch, and a modulator. The tuner
includes the RF amplifier, a mixer, and a local oscillator while
the demodulator includes a surface acoustic wave (i.e., a SAW)
filter, a demodulator, an output buffer, and frequently, an
external buffer that is often necessary to provide a current
necessary to drive some external appliances that is larger than
can be obtained with the output buffer included in the integrated
circuit.2
In the operation of a typical tuning circuit constructed as
an integrated cirucit [sic: circuit], a broadcast signal is
amplified at its radio frequency, mixed with a local oscillation
frequency signal of a channel predetermined by the local
oscillator in order to convert the broadcast signal into an
intermediate frequency. The intermediate frequency is then
demodulated. The demodulated video signal is applied through
the internal output buffer that provides a small drive current of
between approximately 0.5 ~ 1 milli-Amperes. A selection
switch selects a video signal to apply to a video signal
processor from between the video signal from the tuner circuit
or a video input signal applied to an input video jack. When the
tuner circuit is constructed as an integrated circuit, an externally
connected circuit can be driven with a driving current of
approximately 0.5 ~ 1 milli-Amperes; this range of amplitudes
is common in integrated circuits.

depicted in the originally-filed Figure 1 constitutes prior art. (See Fig. 1,
filed on August 13, 2002).
2 Appellant’s use of the words “frequently” and “often” indicate that use of
an external buffer was not always necessary in the prior art, even for driving
some external appliances requiring a driving current that is larger than can
be obtained from the tuner’s internal output buffer.
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(Spec. 1-2 (emphases added)).
Appellant further notes observations regarding certain problems
associated with the prior-art tuning circuits:
I have noticed that if a circuit connected to the integrated tuner
circuit should happen to require a driving current of 10 milli-
Amperes or more however, an external buffer must be
incorporated into the tuner circuit between the output buffer in
order to obtain a sufficiently large driving current from the
integrated circuit. I have found that absent the external buffer,
the ability of the integrated tuning circuit deteriorates to the
point that attenuation occurs in the high frequency signal
components of the video signal, thereby markedly reduces the
gain of the higher frequency characteristics of the video signal.
(Spec. 2).
Appellant discloses several measures that compensate for attenuation
in the high frequency component of the intermediate frequency signal,
thereby enabling the demodulator’s output terminal to be connected directly
to the input of an external circuit without the need for an external buffer.
The impedance value of the external circuit can be adjusted (Spec. 10). The
printed pattern length of a printed circuit board that connects the buffer’s
output terminal to an input terminal of an external tuner/jack input selection
switch can be designed so as “to be as short as possible. . . . to thereby
reduce the capacitance to a minimum” (id.). A SAW filter installed in the
demodulation portion of the tuner circuit can be designed to boost a
frequency near a color frequency fC “by a predetermined amount in
accordance with the amount of attenuation in the high frequency band”
(Spec. 11). Values of a ceramic filter, a resistor, and an inductance of a SIF
TRAP installed in the demodulation portion of the tuner circuit can be
adjusted (id.). That is, the Specification does not provide any express
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definitions or objective standards by which one of ordinary skill can
reasonably ascertain the metes and bounds of the relative terms used to
recite the claimed high frequency component gain.
The closest the Specification comes to providing any objective
standard is in the following two passages. One passage is where the
Specification explains that adjusting an impedance value of an external
circuit to be at least 30 KΩ will prevent the drive current output from the
tuner circuit from increasing (Spec. 10). However, claim 18 cannot be
interpreted as be limited in any manner by this 30 KΩ value because
dependent claim 20 further limits the scope of claim 18 to expressly include
this limitation.
The other passage of the Specification is where Appellant
acknowledges that it was already known that no external buffer circuit is
required when the tuner is connected to an external circuit that requires a
driving current of below 10 milli-Amperes (such as in the prior-art tuner of
Figure 1), but for external circuits requiring higher drive currents, Appellant
concluded conventional tuners experience a level of signal deterioration that
requires compensation by an external buffer (Spec. 2). While this passage
indicates that claim 18 does read on the admitted prior-art tuner circuit of
Figure 1, the passage does not expressly define or delineate the boundary of
claim protection being sought. We instead understand 10 milli-Amperes to
be an example of a situation where means for adjusting the gain must be
used. But this passage does not expressly indicate whether any gain
adjustment means may be used in situations where the external circuit
driving current is below 10 milli-Amperes. Besides, claim 18 does not
contain the 10 milli-Ampere language.
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Independent claims 25, 36, and 37 each contain language that is
similarly indefinite. See claim 25, 36 (each reciting a demodulation circuit
that is “configured to demodulate an intermediate frequency signal . . . such
that compensation is provided for attenuation of a high frequency
component of the intermediate frequency signal”); see also claim 37
(reciting “an external circuit . . . having an input impedance of at least a
predetermined value to compensate for a reduction in drive current of the
demodulated video signal caused by [sic: an] absence of a buffer external to
the integrated circuit”).
Independent claim 14 is even more unclear than claim 18. Claim 14
also states that “a high frequency component of [the] frequency
characteristics defined intermediate frequency signal [has] a gain sufficient
for compensating an attenuation of [the] high frequency component to
satisfy [the] required input level of [an] external circuit.” But unlike claim
18, claim 14 does not recite the external circuit affirmatively. As such claim
14 does not even set forth any reference input level for which the attenuation
compensating gain must be sufficient.
Claims 36 and 45 are indefinite for additional reasons. Claim 36
recites the following limitation, and claim 45 recites a similar limitation:
a portion of a printed circuit board comprising a pattern
that electrically couples said output terminal to an input
terminal of a circuit external to said tuner circuit, said pattern
being short to provide low capacitance of said pattern, thereby
to generate less of the attenuation of a high frequency
component of the demodulated video signal.
(emphasis added).
This limitation includes relative terminology that does not reasonably
apprise one of ordinary skill in the art of the metes and bounds of claim
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protection being sought. It is not reasonably clear (i) how short the wiring
pattern must be to constitute being “short”; (ii) how low the pattern
capacitance must be to constitute being “low capacitance”; and (iii) to what
extent the signal attenuation must be limited in order to constitute “less of
the attenuation.”
For the foregoing reasons, then, we exercise our authority under 37
C.F.R. § 41.50(b), rejecting independent claims 14, 18, 25, 36, and 37, as
well as dependent claim 45, as indefinite under 35 U.S.C. § 112, ¶ 2, for
failing to “‘clearly distinguish what is claimed from what went before in the
art and clearly circumscribe what is foreclosed from future enterprise.’” See
Halliburton, 514 F.3d at 1249 (citation omitted).
Because the independent claims are so indefinite that “considerable
speculation as to [the] meaning of the terms employed and assumptions as to
the scope of such claims” is needed, we do not address the merits of the
Examiner’s rejection under 35 U.S.C. § 102(b) over Rotzoll. See In re
Steele, 305 F.2d 859, 862 (CCPA 1962) (holding that the examiner and the
board were wrong in relying on what at best were speculative assumptions
as to the meaning of the claims and basing a prior-art rejection thereon). We
therefore reverse this rejection pro forma.

35 U.S.C. § 112, ¶ 1, REJECTION
PRINCIPLES OF LAW
The specification shall contain a written description of
the invention, and of the manner and process of making and
using it, in such full, clear, concise, and exact terms as to enable
any person skilled in the art to which it pertains, or with which
it is most nearly connected, to make and use the same, and shall
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set forth the best mode contemplated by the inventor of
carrying out his invention.
35 U.S.C. § 112, ¶ 1.
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the artisan
that the inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal
support in the specification for the claim language. The content
of the drawings may also be considered in determining
compliance with the written description requirement.
In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983) (citations omitted).
ANALYSIS
Independent claims 25, 36, and 37, as well as dependent claims 26-35
and 38-49, were added by amendment in a submission filed under 37 C.F.R.
§ 1.111 on August 31, 2004. This is roughly two years after the original
filing date of August 13, 2002.
Independent claim 25 recites “a demodulation circuit partially formed
as an integrated circuit . . . .” Independent claim 36 recites “a tuner circuit
having a demodulation circuit partially formed as an integrated circuit . . . .”
Independent claim 37 recites “a tuner circuit partially formed as an
integrated circuit . . . .” Appellant’s originally filed disclosure provides no
evidence that Appellant was in possession of tuner or demodulation circuits
that are “partially formed as an integrated circuit,” as these claims recite.
We therefore exercise our authority under 37 C.F.R. § 41.50(b),
rejecting claims 25-49 under 35 U.S.C. § 112, ¶ 1, for lacking adequate
written description in the originally-filed Specification.

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CONCLUSIONS
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter the
following new grounds of rejection:
Claims 14, 18, 25, 36, 37, and 45 are rejected under 35 U.S.C. § 112,
¶ 2.
Claims 25-49 are rejected under 35 U.S.C. § 112, ¶ 1.
Because the Board of Patent Appeals and Interferences is a review
body, rather than a place of initial examination, we have not reviewed the
claims to the extent necessary to determine whether any of the claims are
unpatentable for any additional reasons. We leave it to the Examiner to
determine the appropriateness of any further rejections.

DECISION
The Examiner’s decision rejecting claims 14-49 is reversed.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter the following
new grounds of rejection:
Claims 14, 18, 25, 36, 37, and 45 are rejected under 35 U.S.C. § 112,
¶ 2.
Claims 25-49 are rejected under 35 U.S.C. § 112, ¶ 1.

FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2007). This regulation states that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Furthermore, 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
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one of the following two options with respect to the new grounds of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
(emphasis added).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. §
1.136(a)(1)(iv).

REVERSED
37 C.F.R. § 41.50(B)

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